The use of Trademarks on the Internet: Problems and solutions Trademark owners perspective Marques cyberspace team September 2012

Agenda - Marques view on the role and responsibility of Internet intermediaries in the field of trademarks - Focus on N&A procedures in Europe - Focus on challenges raised by the new gTLDs September 2012

Role and responsibility of Internet intermediaries o Internet landscape has changed dramatically o New intermediaries have emerged o Current situation / Liability of intermediaries o - Primary liability quite harmonised within the EU o - Legal uncertainty/fragmentation on secondory liability: questions of national law o Clear and detailed guidance needed September 2012

Role and responsibility of Internet intermediaries E-commerce Directive 2000/31/EC Need for clear definitions of hosting, actual knowledge, awareness, expeditiously etc September 2012

Notice and action procedures in Europe o Self regulation to be encouraged and developed Current situation: o - Actions against illegal content deemed to be ineffective and too slow o - Too much legal fragmentation and uncertainty for hosting service providers and notice providers o - Notion of hosting, actual knowledge, awareness, expeditiously not clear o Neither easy to find nor to use pages or tools to notify illegal content September 2012

Approach recommended o All hosting service providers should have a notification illegal content procedure in place o Harmonisation of N&A procedures o Complainants should: - provide sufficient details - clearly identify the alleged illegal content o Evidence that the content provider could not be contacted before contacting the hosting provider or that the content provider was contacted first but did not act? September 2012

Approach recommended o Abusive/unjustified notifications should be prevented and sanctioned - Clear definition of abusive/unjustified notifications needed - Detailed notices to be required - Easy and accessible appeal procedures to be provided o Hosting service provider should consult the providers of alleged illegal content but the content should be removed before informing said providers to avoid delay o Hosting service provider should provide feedback to notice providers about the status of their notice September 2012

Approach recommended o Content to be removed or disabled depending on circumstances - complainant should be able to select option o Content to be removed or disabled as fast as possible depending on circumstances o Exclusion of online intermediaries liability in case of removal of content which was notified and later found to be legal September 2012

Focus - New gTLDs and challenges for brand owners o New shape of the Internet with unlimited number of new generic Top-Level Domains (gTLD) now allowed o Around 1200 gTLD registries expected to open in 2013 vs about 275 ccTLD domain registries and 21 gTLD registries : increase of at least 300% September 2012

Focus - New gTLDs and challenges for brand owners o Main issue: protection at the second level / cybersquatting o Defensive registrations not affordable o Trademark Clearinghouse and RPMs (URS, PDDRP and UDRP) not sufficient o Liability of registrars and registries with regard to the new gTLDs September 2012

Focus - New gTLDs and Marques recommendation o Disclosure by the registrars of the registrants details using whois privacy services o All registries, gTLDs and ccTLDs, should adopt a version of the URS o Loser Pays o Allow the transfer of a domain to a winning complainant following a URS complaint and speed up the URS to a maximum of 10 working days. September 2012

Focus - New gTLDs and Marques recommendation o Block on the string corresponding to a mark at the second level in all registries for trademark owner which has filed 10 or more successful procedures to reclaim said mark o Registries which support domain names at the second level which feature in more than 120 URS or UDRP cases in a year should be required to develop and implement stronger rights protection measures or face suspension of their registries or financial penalties September 2012

Thank you!! September 2012